Judgments nº T-241/05 of Court of First Instance of the European Communities, May 23, 2007

• Resolution Date: May 23, 2007
• Issuing Organization: Court of First Instance of the European Communities
• Decision Number: T-241/05

In Joined Cases T-241/05, T-262/05 to T-264/05, T-346/05, T-347/05, T-29/06 to T-31/06,

The Procter & Gamble Company, established in Cincinnati, Ohio (United States), represented by G. Kuipers, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by D.†Schennen, and subsequently by G.†Schneider, acting as Agents,

defendant,

NINE ACTIONS brought against the decisions of the First Board of Appeal of OHIM of 14 April 2005 (Case R 843/2004-1), of 3 May 2005 (Case R 845/2004-1), of 4 May 2005 (Case R 849/2004-1), of 1 June 2005 (Case R 1184/2004-1), of 6 July 2005 (Cases R 1188/2004-1 and R 1182/2004-1), of 16 November 2005 (Case R 1183/2004-1), of 21 November 2005 (Case R 1072/2004-1) and of 22 November 2005 (Case R 1071/2004-1), concerning applications to register three-dimensional trade marks,

THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Fourth Chamber),

composed of H. Legal, President, V. Vadapalas and N. Wahl, Judges,

Registrar: C. Kantza, Administrator,

having regard to the applications lodged at the Registry of the Court of First Instance on 29 June 2005 (Case T-241/05), 18 July 2005 (Cases T-262/05 to T-264/05), 12 September 2005 (Cases T-346/05 and T-347/05) and 24 January 2006 (Cases T-29/06 to T-31/06),

having regard to the responses lodged at the Registry of the Court of First Instance on 30 September 2005 (Cases T-241/05 and T-262/05 to T-264/05), 26 October 2005 (Cases T-346/05 and T-347/05) and 18 May 2006 (Cases T-29/06 to T-31/06),

having regard to the joinder of the cases decided on 24 October 2006,

further to the hearing on 13 December 2006,

gives the following

Judgment

†Background to the dispute

1††††††††On 31 May 2000, the applicant submitted nine applications for Community trade marks to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.

2††††††††The marks for which registration was sought, as set out below, are three-dimensional shapes:

-††††††††square white tablet with a lilac six-petalled floral design (Case T-241/05):

-††††††††square white tablet with a green six-petalled floral design (Case T-262/05):

-††††††††square white tablet with a lilac four-petalled floral design (Case T-263/05):

-††††††††square white tablet with a green four-petalled floral design (Case T-264/05):

-††††††††square white tablet with a blue six-petalled floral design (Case T-346/05):

-††††††††square white tablet with a green five-petalled floral design (Case T-347/05):

-††††††††square white tablet with a blue five-petalled floral design (Case T-29/06):

-††††††††square white tablet with a blue four-petalled floral design (Case T-30/06):

-††††††††square white tablet with a lilac five-petalled floral design (Case T-31/06):

.

3††††††††The goods for which registration is sought come within Class 3 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description for all of the applications: -Washing and bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; preparations for the washing, cleaning and care of dishes; soaps-.

4††††††††By nine decisions taken between 28 July and 8 November 2004, the OHIM examiner dismissed the applications for registration pursuant to Article 7(1)(b) of Regulation No 40/94.

5††††††††The applicant filed nine notices of appeal with OHIM against those decisions, pursuant to Articles 57 to 62 of Regulation No 40/94.

6††††††††By nine decisions of 14 April 2005 (Case T-241/05), 3 May 2005 (Case T-263/05), 4 May 2005 (Case T-264/05), 1 June 2005 (Case T-262/05), 6 July 2005 (Cases T-346/05 and T-347/05), 16 November 2005 (Case T-31/06), 21 November 2005 (Case T-30/06) and 22 November 2005 (Case T-29/06) (together, -the decision contested-), the First Board of Appeal of OHIM dismissed those appeals, taking the view that the marks applied for were devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94.

†Forms of order sought by the parties

7††††††††The applicant claims that the Court should:

-††††††††annul the contested decision;

-††††††††order OHIM to pay the costs.

8††††††††OHIM contends that the Court should:

-††††††††dismiss the applications;

-††††††††order the applicant to pay the costs.

†Law

†Arguments of the parties

9††††††††In each case, the applicant raises a single plea relating to the infringement of Article 7(1)(b) of Regulation No 40/94.

10††††††As regards the relevant consuming public, the applicant claims that the goods in question are aimed at consumers doing their daily shopping and who are therefore more circumspect. In addition, the tablets are amongst the most expensive goods in the category of detergent products sold in supermarkets, with the result that a high level of attention is given to their shape and design by the consumer.

11††††††In addition, manufacturers on the market concerned, which is highly competitive, have considerable incentive to distinguish the appearance of their goods in relation to those of their competitors in order to attract consumers- attention, as demonstrated by the large number of applications for the registration of shapes of detergent tablets as marks. The examples of television advertising, annexed to the applications in Cases T-29/06 to T-31/06, confirm the argument that the tablets are used by manufacturers for purposes of distinguishing their goods. Those arguments show that consumers are fully capable of perceiving the tablet as an indication of commercial origin. This point is confirmed by the wide range of detergent tablets available on the market.

12††††††In the context of assessing the habits of the consumer concerned, the Board of Appeal was wrong to take account of the fact that the goods concerned are generally sold in packaging bearing a number of verbal or figurative features. The circumstances relating to the envisaged use of the marks applied for cannot have any bearing on the assessment of distinctiveness (Case T-355/00 DaimlerChrysler v OHIM (TELE AID) [2002] ECR II-1939, paragraph 42). By way of example, if the tablets are sold in packaging, they may none the less be depicted on the packaging, sold in transparent packaging or in packaging having the same shape as the mark applied for. A model of the tablet could be attached to the packaging of the product.

13††††††In addition, even if the Board of Appeal could have taken into account the circumstances of the contemplated use of the marks applied for, it should also have had regard to other factors, such as the price of the product, which is higher than that of washing liquid or powder, and the way in which the tablet is presented in advertising.

14††††††So far as concerns the marks applied for, the Board of Appeal failed to take into account all their specific features, namely:

-††††††††the thick rectangular, almost cube-like, shape of the tablet, containing two square sides with rounded edges;

-††††††††the presence of two very distinct colours, white and, depending on the tablet, lilac, green or blue;

-††††††††the layout of the colours, one of those colours being used in a design in the centre of the tablet, and not in different layers;

-††††††††the shape of design on the tablet.

15††††††By those elements, the marks applied for can be distinguished clearly from the detergent tablets available on the market. In support of that argument, the applicant produced representations of tablets marketed at the time when the applications for the marks in question were lodged.

16††††††The Board of Appeal was wrong to take the view that those elements were common for the goods claimed, dictated by practical considerations, and that they did not change significantly the appearance of the tablets. In particular, it failed to appreciate the fact that the specific feature of the tablet is its cubic form, distinguished from flatter rectangular shapes of tablet on the market, as well as its two separate colours, laid out in a unique way to attract attention. It failed to demonstrate the existence, on the date of the applications for the marks, of a tablet having comparable elements.

17††††††In addition to those features, the marks applied for comprise a design at the centre of the tablet which constitutes an additional and distinctive feature within the meaning of the judgments of the Court in Case T-128/00 Procter & Gamble v OHIM (Square tablet with inlay) [2001] ECR II-2785, paragraph 60, and Case T-129/00 Procter & Gamble v OHIM (Rectangular tablet with inlay) [2001] ECR II-2793, paragraph 60. In the light of that feature, the marks applied for cannot be regarded as consisting exclusively of the shape and colours of the product in question, in the absence of any graphic element.

18††††††The designs in question represent a floral pattern, or star with four, five or six petals. There is no tablet on the market comprising a design of a distinct form or shape. The Board of Appeal distorted that element by considering it to be comparable to a basic geometric form, such as the rectangular inlay and the triangular inlay examined in the Square...